No likelihood of confusion between TS SLOVENIA and TIS

The Slovenian Intellectual Property Office (SIPO) has rejected an opposition against the registration of the mark TS SLOVENIA based on the earlier registered marks TIS, ETIS, TELEKOM SLOVENIJE and TISA (Case 31207-919/2005-16, October 22 2007). SIPO held that there was no likelihood of confusion between the marks.

On July 7 2005 Deutsche Telekom AG applied for the registration of the mark TS SLOVENIA in plain block letters for goods and services in Classes 9, 16, 35, 36, 38, 41 and 42 of the Nice Classification. On January 30 2007 Telekom Slovenije dd filed an opposition against the application based on its earlier registered marks TIS, ETIS, TELEKOM SLOVENIJE and TISA, which cover essentially the same goods and services.

SIPO rejected the opposition, holding that consumers would perceive and pronounce the marks TIS, ETIS and TISA as words ('tis', 'etis' and 'tisa'), whereas they would see the first part of the trademark applied for ('TS') as an acronym. The second part of the proposed mark ('Slovenia') would also prevent confusion between the marks.

Comparing the marks TELEKOM SLOVENIJE and TS SLOVENIA, SIPO found that although the second part of the marks was almost identical, the first part was different.

SIPO also rejected Telekom Slovenije's argument that 'TS' represented the abbreviation of its name. SIPO held that the acronym 'TS' could stand for a number of words in connection with the relevant goods and services (eg, telecommunication services, telephone services and technical services).

On November 22 2007 Telekom Slovenije filed an administrative action against SIPO at the Administrative Court. The judgment is expected to be issued within one to two years. Whether SIPO's decision will become final thus remains to be seen.

Gregor Macek, ITEM doo, Ljubljana

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